(2) If any person infringes the monopoly in a registered design, the owner of the design may bring an action or proceeding against him for infringement of the monopoly in the design."
25 The trial judge considered in some detail (at 573 et seq) the evidence upon which Philips relied to show that there had been either an obvious imitation or a fraudulent imitation of its registered design. His Honour came to the conclusion (at 582) that the Remington shaver in question was "based on or derived from the same design" as an earlier Remington model the design of which "was knowingly, consciously or deliberately based on or derived from the Philips design". Nevertheless, he decided (at 587):
"As a whole there are in my judgment substantial differences of a material kind between the registered design and the Remington product which give the latter a distinctively different appearance from the former. Those differences are principally the size of the head base and the size and shape of the handle. The differences between the two fascia plates are, in my view, also significant."
He held that the Remington shaver was not an imitation of the registered design, and therefore there was no infringement. Questions of the meaning of "obvious" or of "fraudulent", in this context, disappear where an impugned product is just not an imitation: L J Fisher & Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565 at 581; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 12-13.
26 Had the Remington shaver been an imitation, though with differences sufficient to prevent it being an obvious imitation, the question would have arisen whether it was a fraudulent imitation, and the Court would have needed to consider the nature of the element of fraud involved in such an imitation. For, ironically enough, the principal difference contributing to the conclusion that there was not an imitation at all was not produced by a fraudulent attempt to disguise the copying which had taken place, but despite Remington's best efforts to reduce that particular difference. As the trial judge put it (at 583-584):
"[O]ne of the differences - indeed the most striking difference - between the design in suit and the Remington product is the considerably greater size of the Remington product's head base. The evidence … establishes that Remington would greatly have preferred a smaller head but could not achieve it because of the size of the internal components and the need to waterproof the machinery. That difference thus exists not because Remington wished to disguise any copying but because the character of the particular machine dictated it."
27 Where a product is alleged to constitute an infringement of a registered design, the question whether that individuality of appearance, which is the essence of a design, exhibited by the registered design, has been imitated by the impugned product is a question to be answered by the eye. As Taylor, Menzies and Owen JJ said in their joint judgment in Malleys Limited v J W Tomlin Pty Limited (1961) 180 CLR 120 at 125:
"The monopoly, if there be one, is for the particular appearance represented by the drawings and for nothing else."
The eye of the Court must determine whether that particular appearance has been applied or imitated. It may indeed be that the eye's perception is insusceptible of clear statement in words. In In re Wolanski's Registered Design at 281, Kitto J explained, by reference to the Pensées:
"[T]he eye, like the heart according to Pascal, has its reasons that reason does not know".
The corollary was stated by Lockhart J (with whom Gummow J agreed) in Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403 at 412:
"Appearance to the eye is the critical issue, and the decision of the trial judge is to be given particular weight unless some error in his judgment has been demonstrated: Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1986) 6 IPR 361 per Fisher J at 367 and Beaumont J at 373-4."
See also S W Hart & Co Proprietary Limited v Edwards Hot Water Systems (1985) 159 CLR 466 at 478; Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 at 350; Commissioner of Taxation v Chubb Australia Limited (1995) 56 FCR 557 at 560, 572-573.
28 In the present case, I do not think any error has been demonstrated in the judgment of the trial judge. Furthermore, for myself, I take the same view of the Remington shaver as he did. Its visual impact seems to me to be dominated by the solidity, even bulkiness, of the shaving head. That functional reasons account for this appearance is beside the point; it is the appearance itself that matters. The Remington shaver shows a palpable difference from the finer lines of the registered design.
29 Counsel for Philips argued that an error in the trial judge's approach had been demonstrated, in so far as his Honour did not give separate and particular attention to the appearance of so much of the Remington shaver as is revealed by the view of it obtained through the clear plastic of the packaging in which it would be found in a shop. The argument was that some persons, perhaps particularly gift buyers, might only see it thus until after a purchase had been made. But I can see no error in this respect. From the origins of the legal protection of designs, "arguably the first modern area of intellectual property law" (B Sherman & L Bently, The Making of Modern Intellectual Property Law (1999) at 76), in the Calico Printers' Act 1787 ("an Act for the Encouragement of the Arts of Designing and Printing Linens, Cottons, Calicos and Muslins by Vesting the Properties thereof in the Designers, Printers and Proprietors for a Limited Time") and the later Calico Printers' Act 1794, "the focus of attention was upon the product on which the print or design was stamped - the fabric, dress and so on" (ibid, 37). The product has remained the focus of attention. In Malleys Limited v J W Tomlin Pty Limited, it was stated in the joint judgment (at 126):
"An infringement of copyright in a registered design occurs when another person, without the licence or authority of the owner, 'applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered' (s. 30(1)(a)). As has already been said, the article in respect of which the design is registered is 'Bottom for toilet pan' and if in this case there has been an infringement, it is because the appellant has applied the design or a fraudulent or obvious imitation of it in the making of 'articles' designated as bottoms for toilet pans. This can only be determined by looking at the bottoms as fabricated before the process of incorporating them in pans begins and determining whether they are of substantially the same shape as that represented by the registered design."
Later (at 128), their Honours reiterated:
"[A]s we have already indicated, the time at which the comparison must be made is when the bottom is completed and before the next step in the manufacture of pans commences."
To treat the problem as involving an examination of the product after it had been partly hidden by being enclosed in packaging would be the antithesis of what the High Court held to be required.
30 In D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 228, Jacobs J noted that there was not, as there is not here, any statement of the alleged novel features in respect of which the registration claimed protection for the design. His Honour said:
"The absence of any such statement means in effect that it is necessary to regard each article as a whole and see whether there is a substantial identity between them."
In a passage which is directly relevant to the argument I am presently considering, his Honour continued (at 228-229), after referring to "a distinctive difference from the registered design", as follows:
"Mr Robinson in his evidence minimized this difference, but he did so by having regard not to the chair frame alone as a design [the registered design was for 'metal chair frame' - see 225], but to the chair as it would look when the upholstery was on it. Such an approach is not permissible since the chair frame is the subject of the registration and it is to the frame and that alone that one may have regard when considering the particular or distinctive features (Malleys Ltd v J W Tomlin Pty Ltd)."
(Here, of course, it is the shaver that is the subject of the registration.) His Honour added a comment on a particular feature, and said:
"This might not be particularly noticeable when the chair has its upholstery upon it, but it is noticeable in the chair frame in conjunction with the extension of the back supports. … The shape and general appearance of the chair frame are to me quite distinctfrom the registered design in these respects."
31 The appellant relied on a solitary dictum of Lloyd-Jacob J in R B Watson & Co Ltd v Smith Bros (Wirewares) Ltd [1963] RPC 147 at 151, which is quoted by Lockhart J, but is not referred to by Fox J (with whom Jenkinson J agreed), in Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd (1986) 6 IPR 377 at 386, that "the proper basis of comparison is that which will present itself in the normal channels of trade". It does not appear that this dictum has ever been the basis of a decision in any court. In this court, it cannot withstand the weight of the High Court authority to which I have referred. In my opinion, his Honour did not err when he compared the registered design with the Remington shaver, instead of concentrating upon a partial and obscured view of it. However, having looked at the packaged shaver presented to the Court, I am in no doubt that it would not have made any difference had his Honour performed the task in the way in which Philips says he should have performed it. The bulkiness of the shaving head of the Remington shaver would have remained a prominent feature, distinguishing it clearly and substantially from the registered design.
32 A question was raised in the argument concerning the nature of fraudulent imitation. In Malleys Limited v J W Tomlin Pty Limited, the joint judgment contains (at 127) the following comments:
"Turning to s.30 it is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is: - (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying). Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation must require something more because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation." (Emphasis added.)
This passage was referred to in Firmagroup Australia Pty Limited v Byrne & Davidson Doors (Vic.) Pty Limited (1987) 180 CLR 483 at 489, where Wilson, Brennan, Deane, Dawson and Gaudron JJ, in a joint judgment, said:
"Special leave was granted in this case chiefly to consider the distinction between 'obvious' and 'fraudulent' imitations. On analysis, that question does not arise. However, nothing that was submitted in argument before this Court casts doubt upon the brief but accurate description of obvious and fraudulent imitations in Malleys Case."
At the same page, their Honours endorsed the view of the trial judge, King J, as a correct statement of the position:
"My conclusion is that although there are common features of construction in the compared designs, it must appear, to find fraudulent imitation, that the overall distinctive appearance of the registered design has been taken. In this case salient features of construction are taken, but the whole unit has been so redesigned to incorporate them that a different design has been produced. Thus the change in balance of the features and the lengthening of the article are not mere disguise but are themselves salient features of the defendants' design which are novel and unique in that design."
33 In Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 at 503, I said:
"It seems to me that what makes conduct of the relevant kind fraudulent is the infringer's dishonest concealment of the reality of copying in order to evade being held legally responsible for it. That form of dishonesty can only arise where the copier knows or suspects that his copying will infringe another's legal rights."
I went on to hold (at 504) that although the respondent, in one respect, deliberately copied, making changes with the intention of disguising its action, the ultimate result was distinctly different from the applicant's registered design, so that there was no infringement. A similar view was taken by Hill J in Lift Verkaufsgerate GmbH v Fischer Plastics Pty Ltd (1993) 27 IPR 187 at 195, where his Honour said:
"For a case of fraudulent imitation to be made out, the parties are in agreement that as a minimum it is necessary for the applicant to show that the respondent has actually made an imitation."
His Honour continued:
"It is inherent in the concept of a fraudulent imitation that there will be an intention to copy but with differences which, at the end of the day are 'mere disguises to hide the fact of copying'. As the High Court put it in Malleys the differences will be 'both apparent and not so slight as to be insubstantial' in the case of a fraudulent imitation: see 354."
His Honour also said (at 200):
"Clearly, a fraudulent imitation may display greater departures from the original design than would otherwise have been apparent if the case were one of obvious imitation, for there is involved an attempt to disguise the imitation."
34 Other cases which have referred, when discussing fraudulent imitation, to whether there were attempts to disguise the imitation include Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd at 349 (Sweeney, Fisher and Sheppard JJ); Wilson v Hollywood Toys (Australia) Pty Ltd (1996) 34 IPR 293 at 300 (Merkel J); Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119 at 127 (von Doussa J); and Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd at 12, 13 (Black CJ, Lockhart and Gummow JJ). In Rose v J W Pickavant and Company, Ltd (1923) 40 RPC 320 at 332, Romer J cited an old decision in which Manisty Jhadsaid of the word "fraudulent" in the expression "fraudulent imitation":
"I think the word was introduced for the very purpose of meeting the case of an imitation, not an obvious imitation, but an imitation varied for the purpose really of perpetrating what is a legal fraud."
Having referred (at 333-334) to the Defendants' need of "a filler that should as far as possible, resemble the Plaintiff's", Romer J continued:
"In view of the fact that the Plaintiff's Design was registered, it was equally necessary that their filler should exhibit some differences. But the Defendants' purpose would be defeated if these differences were too apparent. The Defendants accordingly caused a filler to be constructed that exhibits the same general eccentricity of form as the Plaintiff's Design, and one that on being viewed from at any rate one angle of view is practically indistinguishable from such Design, as appears from a photograph used at the trial. It is, however, a filler that, on comparison with that of the Plaintiff, does exhibit differences sufficient to prevent the one being an obvious imitation of the other. This, in my opinion, is exactly the kind of thing that the Legislature intended to prevent when making unlawful a fraudulent imitation of a registered Design … ."
35 In the Report on the Law Relating to Designs of the Designs Law Review Committee (the "Franki Committee") (February 1973), the passage I have quoted from the decision of the High Court in Malleys Limited v J W Tomlin Pty Limited, in which the nature of a fraudulent imitation is indicated, is cited by the committee as being a summary of "the effect of" s 30. The committee commented (at 29):
"We are satisfied that the broad protection afforded by section 30 is appropriate and should remove any idea that if a design is copied infringement can be avoided by attempting to disguise copying by making apparent and not insubstantial differences. We do not recommend that there should be any major amendment of it."
Discussing the report, Mr D C Pearce (as Professor Pearce then was), in an article entitled "DESIGN LAW REFORM" in Australian Business Law Review (1974) Vol 2, 112 at 120-121, wrote:
"In Malleys Ltd v J W Tomlin Pty Ltd the High Court defined fraudulent imitation as a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying. … The committee considered that the prohibition of fraudulent imitation provided a useful protection against the disguised imitation and should be retained."
36 I adhere to the view that the element of fraud, in a fraudulent imitation, is to be found in a dishonest concealment of the reality of copying in order to evade responsibility for it. As, in this case, the principal difference from the registered design was produced, not by an attempt at concealment, but by a substantial making over of the design to deal with an intractable technological problem, there was no fraudulent imitation. With respect to those who think otherwise, I find nothing unsatisfactory about this position: for cases where a registered design is not simply applied by the defendant, there is a special test to deal with disguised copying, which can accommodate not insubstantial differences, but otherwise, there is the one test, which looks to obvious imitation.
The Claims under s 52 (Trade Practices Act) and for Passing Off
37 The appellants also relied on causes of action under s 52 of the Trade Practices Act 1974 and for passing off. These were argued together, reliance being placed on the same evidentiary material. The foundation of Philips' contentions was the long period of effective monopoly it had enjoyed in respect of the production and sale of triple rotary shavers. There is no doubt this has led to an association between Philips and triple headed rotary shavers in the minds of many persons. That association has been assiduously cultivated by advertising images and marketing campaigns, in which the configuration of the head of the shaver has been emphasized (as one might expect, since it distinguishes the type of shaver from foil shavers, and constitutes a visible working feature), though always the shaver has been held up to the public as an appealing Philips product, not simply as an appealing product. Attempts have been made, in advertising, to heighten the appeal by a "masculine" association with a fantasy world of fast sports cars - Jaguars and Porsches.
38 One of Philips' most strongly urged contentions centred upon the complaint that Remington had taken up the motoring theme, by referring to the three heads as three wheels, and generally. According to Philips, this associated the Remington shaver with the Philips, so as to deceive purchasers and appropriate Philips' goodwill.
39 Remington's response robustly asserted its right to produce a proven product in all its features - including its technology and anything belonging to the public's perception of the product itself. What Remington could not and did not do was to suggest that its triple rotary shaver was in any sense a Philips shaver. On the contrary, the Remington shaver was very clearly marked with the Remington name, a well-known brand. In practice, it was to be expected that the rival shavers would be displayed in shops as competing products, each plainly identified as a Philips or as a Remington.
40 The respondent relied on the leading High Court case, Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191, and on Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136, where a Full Court (Sundberg, Emmett and Hely JJ) refused to distinguish the former authority on the ground urged by counsel (see 149) "that a distinction should be drawn between the copying of design and the copying of trade dress or get-up". See also Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd ubi cit supra. The principle for which the decision in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd stands is stated by Gibbs CJ in passages at 196 and 199-200:
"[I]t is difficult to escape from the conclusion that the appellant deliberately copied the design and appearance of the respondent's chairs. However, it does not follow that the appellant had any intention to mislead or deceive. One manufacturer may copy the product of another, because that product has proved successful and with the intention of taking advantage of an available market for a product of that kind, but with no intention of passing off his own product as the product of the original manufacturer. The fact that the appellant sold its products to retailers, and labelled them before delivery, and the absence of any evidence of any improper agreement between the appellant and any retailer, support the conclusion that the appellant had no intent to mislead or deceive.
...
Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s. 52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the article serves. In some cases indeed no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public.
See also, per Mason J, at 210-211 and, per Brennan J, at 224-226.
41 In Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (see also Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd [2000] FCA 756), there was a finding (as appears at 144) "that the respondents had deliberately set out to copy the trade dress or get-up of the Dr Martens footwear", but nevertheless the respondents' brandings, marking and labelling of their products were sufficient to defeat claims of the kind now made against Remington. With reference to an attempt by Dr Martens Australia Pty Ltd to distinguish Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd, the Full Court, having rejected it, added (at 150) a reference (with evident approval) to the decision of Lehane J upon the interlocutory application in the present matter, when his Honour held there was no serious question to be tried of contravention of s 52 or of passing off: Philips Electronics NV v Remington Products Australia Pty Ltd (1997) 39 IPR 283 at 294, 296.
42 I accept that, in view of the similarity of the Remington triple rotary to the Philips, and in view of the similarity of the image each competitor sought to project for its product, it was incumbent upon Remington to distinguish the shaver it was putting on the market from the rival shaver that was already there: Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 507-508, 515; United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513 at 524. However, I can see no error in the trial judge's approach to this issue, or in his conclusion in Remington's favour. Given that Remington desired to produce a shaver like the Philips shaver in most respects not the exclusive property of Philips by virtue of some right of intellectual property, it is difficult to see what more Remington could reasonably be expected to have done to emphasize that the product was its own triple rotary shaver. And what it did, on the judge's findings which I think should stand, was in fact sufficient to achieve the purpose.